Interflora Inc & Anor v Marks and Spencer Plc (Rev 1)

In keyword-advertising cases, a trade mark proprietor bears the burden of proving that the advertisement does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain the origin of the advertised goods or services. The average-consumer assessment is qualitative, but may properly take account of whether a significant proportion of the relevant public is likely to be confused.

The doctrine of initial interest confusion adds no separate test to EU trade mark law. A trader may use a rival’s sign indirectly by selecting generic keywords without negative matching where the object and effect is to trigger advertisements in response to searches for that sign. Use alone does not establish infringement.

Interflora Inc & Anor v Marks and Spencer Plc concerned the use of “interflora” and related terms in Google keyword advertising for competing flower-delivery services.

Arnold J held that the advertisements infringed the claimants’ registered trade marks under Article 5(1)(a) of First Council Directive 89/104/EEC and Article 9(1)(a) of Council Regulation 40/94: [2013] EWHC 1291 (Ch). He also made rulings on evidence, costs and injunctive relief, including broad matching and negative matching.

The defendant appealed. The central questions were the proper average-internet-user test, the burden of proof, the relevance of initial interest confusion, the treatment of the evidence, and whether generic keyword bidding without negative matching could amount to use of the sign.

1. Appeal allowed. The finding of infringement could not safely stand. The claims under Article 5(1)(a) of First Council Directive 89/104/EEC and Article 9(1)(a) of Council Regulation 40/94 were remitted to the High Court for retrial.

2. The governing origin-function inquiry, drawn from Google France SARL v Louis Vuitton Malletier SA [2010] ECR I-0000, is whether the advertisement does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services originate from the trade mark proprietor, an economically linked undertaking, or an unconnected third party.

3. The average consumer is a normative and hypothetical person, not a mathematical average or a statistical headcount. Nevertheless, the assessment may take account of the reaction of a significant proportion of the relevant public. Infringement is not precluded merely because many, or even a majority, of consumers are not confused.

4. The trade mark proprietor bears both the legal and practical burden of establishing the necessary elements of infringement. The judge had wrongly treated the advertiser as bearing an evidential burden to show that there was no real risk of confusion. The need for an advertiser to frame its advertisement clearly does not reverse the burden in infringement proceedings.

5. Initial interest confusion is an unnecessary and potentially misleading gloss on the carefully formulated EU tests. It should play no part in the national court’s analysis of keyword advertising of this kind.

6. The judge had permissibly admitted the academic material outside CPR Part 35. However, he should not have relied on Mr Rose’s opinion after ruling it inadmissible, and he gave excessive weight to the Hitwise data despite the evidence that it could not establish consumers’ intentions or confusion. Those errors were material to a finely balanced evaluative conclusion, so a retrial was required.

7. A trader may indirectly use a rival’s trade mark where, assessed in all the circumstances, selection of generic keywords without negative matching has the object and effect of displaying its advertisement in response to searches for that mark. That use does not itself prove infringement; the origin-function test must still be satisfied.

8. The court also gave obiter guidance that a Community trade mark injunction is ordinarily EU-wide but must be confined to uses liable to affect the mark’s functions, and that any injunction must be proportionate.

• Court of Appeal (Civil Division): Allowed the defendant’s appeal and remitted the relevant infringement claims for retrial: [2014] EWCA Civ 1403.
• High Court, Chancery Division, Intellectual Property and Community Trade Mark Court: Arnold J found infringement under Article 5(1)(a) of First Council Directive 89/104/EEC and Article 9(1)(a) of Council Regulation 40/94: [2013] EWHC 1291 (Ch). He also made evidence, costs and injunction rulings: [2013] EWHC 936 (Ch); [2013] EWHC 1430; [2013] EWHC 1484 (Ch).